2. The Domain Name and Registrar

The disputed domain name <stonepanel.com> is registered with Nameview Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 18, 2009. On February 19, 2009, the Center transmitted by email to Nameview Inc. a request for registrar verification in connection with the disputed domain name. On February 23, 2009, Nameview Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on February 24, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on February 24, 2009. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 25, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was March 17, 2009. The Response was filed with the Center on March 17, 2009.1

The Center appointed Jeffrey D. Steinhardt, José Carlos Erdozain and David E. Sorkin as panelists in this matter on April 15, 2009. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

Complainant owns Spanish trademark Registration No.2649574 for the mark STONEPANEL in International Class 19, with an application (and therefore priority) date of May 4, 2005.

The disputed domain name was registered March 20, 2006. At the time of the filing of the original Complaint, the domain name registrant was listed in the registrar's Whois database as Stonepanel.com c/o Whois Identity Shield. “Whois Identity Shield” is a privacy protection service. Subsequently, in response to the Center's request for registrant verification, the registrar disclosed Vertical Axis, Inc. as the underlying registrant of the disputed domain name, and the Complaint thereafter was amended to name Vertical Axis, Inc. as Respondent.

Co-Respondent Stonepanel.com c/o Whois Identity Shield continues to be listed as the registrant in Nameview Inc.'s Whois database. The Panel considers Vertical Axis, Inc., as the underlying domain name owner, to be the primary Respondent.2

The website to which the disputed domain name routes currently displays sponsored advertising links, largely to what appear to be third-party sites related to stone building materials and related services.

Complainant also owns several domain names that include the STONEPANEL mark.

5. Parties' Contentions

A. Complainant

Complainant states that it is a member of a company group that is a worldwide leader in marketing natural stone for construction. Complainant avers that it buys and processes natural stone from Asia and America, and uses these materials to create panels composed of stone, mounted on a cement base reinforced with a metal skeleton. The creation of such stone panels, Complainant avers, means that the panels can be used for exterior building cladding in a simple manner that “requires no skilled labor, with no wasted material.”

i. Confusingly Similar to a Trademark in which Complainant has Rights

In addition to referring to the Spanish trademark registration described by the Panel above, Complainant alleges that it has among its worldwide trademark registrations covering the mark STONEPANEL two Community Trade Mark registrations, two registrations in the United States of America and an International registration No. 874244, with an application date of February 16, 2006 (registered January 31, 2007).3

Alluding generally to Complainant's marketing activities in Spain and elsewhere, Complainant contends that the STONEPANEL mark is famous. It notes that a search on Google or Altavista for “stonepanel” yields “more than ten” Internet links which lead to Complainant's website, “and many others are links to products in which made comments on them [sic], both national and international pages on which recognizes the quality and relevance of stonepanel products.”4

Complainant cites UDRP decisions that found confusing similarity when the disputed domain names wholly incorporated a complainant's trademarks. Complainant also notes that Respondent's use of the “.com” suffix in the disputed domain name is “not sufficient to distinguish it [from] the trademark”.

ii. Rights or Legitimate Interests

Complainant's allegations in this section are brief therefore they are set forth verbatim:

“The Defendant has no relation, contractual or employment, to authorize him the use of the Complainant trademarks. The Complainant has exclusive rights over the trademark STONEPANEL and there isn't any agreement to allow the Defendant to use the mark and neither has there been any kind of business relationship with the Defendant in which he had provided material under the trademark STONEPANEL.”

“The Defendant hasn't a trademark registration or having made a fair commercial use and in good faith with this distinctive sign, and the more important thing is that the Defendant hasn't the legitimate right of the domain name.”

“The complainant has registered the following domain names:” [list of domain names omitted]

“We must re-emphasize that at any time the Complainant has authorized the Defendant to the use of the mark STONEPANEL, so he doesn't have any rights over it.”

“In the same way, the Defendant hasn't been known in the market for the sale of stone cladding materials, but he has been dedicated to maintaining an advertising website where various companies on this and other sectors are advertised. None of them have rights over the trademark STONEPANEL, as well as they don't have any business relationship with the Complainant, some of them are competing in the field of stone cladding. It can sense that the only intention to use the trademark STONEPANEL as a domain name is a profit-making by the Defendant because he's taking advantage of the trademark image to achieve greater customer retention and to increase the number of visits to his website.”

iii. Registration and use in Bad Faith

Complainant contends that:

(1) Respondent “has used the complainant's mark to attract potential customers . . . pretending that in the supply of products from companies that advertise on the site are those of the Complainant”;

(2) Respondent “uses the trademark image to confuse customers.” Respondent “creates a false appearance to make believe that the materials that are been advertised on the web site have the same quality as products produced and distributed by the Complainant”; and

(3) By using the disputed domain name (which is associated with the alleged prestige of Complainant), the number of clients who wish to use Respondent's website for advertising will be increased, which shows that Respondent “is using the good name of the trademark STONEPANEL for profit.”

Complainant also writes that Respondent is “causing a disturbance” in Complainant's business, “because many customers are redirected to the website of the applicant when they want to do a search [for] STONEPANEL products.” Complainant cites the decision in Advance Magazine Publishers Inc. v. AT.Search,,WIPO Case No. DES2008-0002, apparently for several propositions: that Respondent has no registration or right to use the disputed domain name; that there was a “lack of response to requests” by Respondent; and that the popularity of Complainant's brand corroborates the use of the disputed domain name solely for the “purpose of attracting consumers to its website by increasing the possibility of confusion”.

On this basis of these allegations, Complainant seeks transfer of the disputed domain name.

B. Respondent

Respondent alleges that it is in the legitimate business of acquiring expiring domain names consisting of generic or descriptive words or phrases, and using the domain names with pay-per-click web sites to generate advertising revenue. Under this business model, according to Respondent, the disputed domain name was registered after the former domain name registration expired and was deleted.

Respondent avers that it has more than 50 other descriptive domain names that contain the word “stone” or “panel,” such as <buildingstone.com>, <carvedstones.com>, <concretestones.com>, <electricpanel.com>, <roofpanels.com> and <wallpanel.com>.

With respect to Complainant's trademarks, Respondent contends that:

(1) the U.S. trademarks listed by Complainant are not registered, but are still pending applications, and that the trademark office required Complainant to disclaim the term “stone panel” from its design mark because the term is descriptive;

(2) as registrations for “designs plus words” that include generic or descriptive terms, such trademark registrations cannot grant exclusive rights in the words “stone panel” alone (citing several UDRP decisions);

(3) the absence of the design element in the disputed domain name constitutes a “small difference” that is sufficient to distinguish the use of the term in the disputed domain name from Complainant's descriptive or generic mark, thus eliminating a possibility of confusing similarity, Tire Discounters, Inc. v. TireDiscounter.com, NAF Claim No. 679485; Webvan Group, Inc. v. Stan Atwood,
WIPO Case No. D2000-1512; and

Respondent argues that the descriptive nature of the disputed domain name is underscored by more than 635,000 third-party web pages listed by a Google search for the term “stone panel.” Respondent notes, in contrast, that a Google search for “stone panel” and “cupa” yields only 575 results related to Complainant, “less than 1/10 of one percent of all search results for the term ‘stone panel.'”

Respondent further asserts “Any confusion that would arise would solely be the result of Complainant having adopted the generic name of the product it sells as the brand of its products.”5

Respondent asserts that it has legitimate interests in the disputed domain name because the domain name consists of common words, and it was not registered with Complainant's trademarks in mind. Respondent states that it had no knowledge of Complainant's mark or company when it registered the disputed domain name. This averment also appears in a Declaration which states that it is being made by a manager of Respondent's company, submitted with the Response.

Respondent states that its website is used to post advertising links for building materials, including stone wall panels. Respondent maintains that the use of a generic or descriptive domain name to generate pay-per-click revenues is a legitimate business model, and that other UDRP panels have expressly recognized the bona fide nature of Respondent's pay-per-click use of such domain names.

Respondent alleges that there is no evidence of bad faith registration or use. Respondent contends that there is no basis from which to infer that Respondent knew of the trademarks when it registered the disputed domain name. Respondent notes that Complainant's earliest trademark was registered on January 1, 2006, while the disputed domain name was registered only two months later, and that Complainant did not appear to have operated any web site promoting its stone panel products until October 2006.

Respondent avers that it took care to register a domain name that incorporates only common words and descriptive terms that became available due to deletion. Respondent contends that panels under the Policy have found the Respondent's domain registration practices to be in good faith and that the expiration of a domain name “is a signal that any trademark claim to the domain name was abandoned and that the domain name could be registered in good faith,” citing Corbis Corporation v. Zest, NAF Claim No. 98441 and CB Publishing, LLC v. Akway International Ltd c/o Hostmaster, NAF Claim No. 926506.

Further, using the Declaration, Respondent avers that it did not register the disputed domain name with the intent to sell it to the Complainant, to disrupt Complainant's business, to confuse consumers, or to prevent Complainant from owning a domain name incorporating its trademark.

According to Respondent and the Declaration, due to a technical glitch, the disputed domain name was listed for sale from January 29, 2009 until February 12, 2009 along with all of Respondent's more than 10,000 other domain names. Respondent states that the listing for sale and the subsequent removal of the listing were “both done on a global basis and had absolutely nothing to do with Complainant's cease and desist letter.”

6. Discussion and Findings

The Rules require the Panel to decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Rules, paragraph 15(a).

Complainant must establish each element of paragraph 4(a) of the Policy, namely:

(1) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(2) Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(3) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel agrees that the disputed domain name <stonepanel.com> is identical to the STONEPANEL mark, in which Complainant has rights.

Most of the trademark registrations listed by Complainant do not appear to establish any exclusive rights to the term “stonepanel,” but instead are stylized marks which include colors and designs.6 However, among these many alleged registrations, the Panel finds that Complainant does own at least one registration issued by the Spanish Patent and Trademark Office for the word STONEPANEL.

The Complaint alleges that Respondent did not have legitimate interests because Respondent is not authorized by Complainant to use Complainant's trademarks and Respondent has no business or employment relationship with Complainant. Since Respondent is not known in the market for sale of stone cladding materials and uses the website to which the disputed domain name routes to maintain advertising links, Complainant infers that Respondent is taking advantage of Complainant's trademarks to profit by increasing the number of customer visits to Respondent's website.

Respondent does not dispute that it is using the domain name commercially; Respondent concedes that it uses the website to which the disputed domain name routes for advertising links that generate pay-per-click revenues. The Panel finds, therefore, that Respondent was not making a noncommercial or fair use of the disputed domain name. Although the Complaint does not address the point, the Panel also finds that the record does not establish that Respondent was commonly known by the disputed domain name.

Whether Respondent has a legitimate interest in using the disputed domain name to generate pay-per-click revenue presents a more involved question.

In light of the Panel's conclusion that the Complaint fails to establish Respondent's bad faith as required under the third element of paragraph 4(a) of the Policy, as elaborated below, the Panel concludes that it is unnecessary to rule upon whether Respondent has rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The Policy sets out four illustrative circumstances, which are evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy:

(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name;

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct;

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on its website or location.

Complainant contends that Respondent's conduct fulfills all the circumstances listed in paragraph 4(b). In contrast, the Panel concludes, however, that the Complaint fails with credible evidence to establish any of them.

First, the Complaint alleges in several different ways that Complainant's product and trademark is well-known. There is little relevant evidence supporting this allegation. The fact that the product may be innovative or that Complainant is part of a company group that employs 2,100 people worldwide, in the absence of surveys or more concrete evidence, does not establish widespread recognition.9 The Panel finds therefore that the Complaint falls short of establishing that the STONEPANEL marks and products were well-known when the disputed domain name was registered.

Second, Complainant's mark is a descriptive mark made up of two words commonly used to describe Complainant's product; a “panel” made of “stone.” Complainant and Respondent both submitted evidence respecting third-party references to the terms “stone panel” or “stonepanel” on the Internet, consisting of Google and Altavista searches. The evidence of both parties supports the conclusion that “stone panel” is a descriptive term which is widely used in the building industry, not necessarily in reference to Complainant or its products. As such, and given that Respondent registers many common words and descriptive terms, the Panel rejects the contentions of the Complaint that Respondent's choice of the disputed domain name demonstrates an intention to confuse or attract customers seeking to find Complainant's products and websites.

Third, while the Panel agrees that the timing of the listing of the disputed domain name for sale with domainbrokers.com might in some cases support a finding of bad faith, there is no evidence about the price of Respondent's offer to sell. The Panel finds therefore that the Complaint does not establish that Respondent intended to sell the disputed domain name “for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name.”

Fourth, the Panel agrees with other UDRP panels that a respondent may use a privacy protection service such as Whois Identity Shield for legitimate purposes. See, e.g., Ustream.TV, Inc. v. Vertical Axis, Inc, supra (discussing both legitimate and abusive employment of privacy protection services). The Panel finds that Respondent's use of the privacy protection service in this case does not, without more cognizable evidence, demonstrate bad faith.10

Fifth, the Complaint alleges that Respondent did not respond to its cease and desist letter, and relies on several UDRP decisions to argue that this justifies a finding of bad faith. See Spanair S.A. v Viajes Tu Billete, S.L., supra;Loquendo S.p.A. c. Diego Alejandro Torres Ruiz, supra; Discovery Communications, LLC. c. Carlos Hernández, supra (trademark was world-renowned and offer to sell exceeded documented costs of registration). In each of these cases, however, the respondent refrained from filing a Response. Since Respondent filed a Response in the instant proceeding, the Panel finds that these decisions are inapposite. That Respondent did not reply to the demand letter is a circumstance to be considered by the Panel in assessing the total circumstances.

Finally, Complainant's Spanish trademark was registered January 1, 2006.11 The Panel has found above that the Complaint fails to establish that the product and trademark were well-known when Respondent registered the disputed domain name. Respondent's registration occurred only two months after the Spanish trademark registration date, and the Panel infers that the passage of only two months after issuance of the Spanish trademark is not a sufficient period to change that conclusion.

In this respect, the Panel has also taken into consideration that Complainant has not submitted any evidence regarding the use of the trademark and, specifically, the extent to which the products associated with the trademark are well known in the world. The sole evidence alleged by Complainant to support its contention that its trademark and products are well-known consists of Exhibit 7. As noted above, Exhibit 7 is merely an example of the content of advertising publicity in the form of a brochure.

The Panel finds that the existence of the brochure does not prove that the brochure has reached a large number of customers, or that Complainant's products or services are well known throughout the world, as Complainant contends. Reliable evidence connected with the trademark and product consisting of customer invoices, proof of the extent of actual advertising in mass-media, or the number of units sold or revenue attributable to sales of Complainant's product would be relevant to demonstrate that Complainant's trademark and product are well known. No documents of this nature have been submitted, however.

To establish bad faith registration, Respondent must have been aware of Complainant when it registered the disputed domain name, and it must have registered the domain name with Complainant's trademark in mind. See, e.g., HP Hood LLC v. hood.com, supra, cited in Which? Limited v. Whichcar.com c/o Whois Identity Shield / Vertical Axis, Inc, supra. It can be difficult for a complainant to prove a respondent's intention at the time of registration, and a panel must often infer the respondent's state of mind based on the totality of circumstances. Dell Inc. v. Derick Appert,
WIPO Case No. D2005-0177; Ganesh Hegde v. Darshan Kapadia,WIPO Case No. D2009-0069.

While the Panel does not find the Declaration submitted by Respondent to be particularly reliable, the Panel infers, under the circumstances and based on the record before it, that Respondent was not aware of Complainant's marks when the disputed domain name was registered. The Panel concludes, therefore, that the Complaint fails to establish bad faith registration and use as required by Policy paragraph 4(a)(iii).

The Panel's conclusion is based only on the record before it in this proceeding. Thus, the Panel does not, by denying the Complaint, endorse Respondent's business model, and expressly rejects as overbroad Respondent's assertion that the expiration of a domain name “is a signal that any trademark claim to the domain name was abandoned and that the domain name could be registered in good faith.”12

7. Decision

For all the foregoing reasons, the Complaint is denied.

Jeffrey D. Steinhardt Presiding Panelist

José Carlos Erdozain Panelist

David E. Sorkin Panelist

Dated: April 29, 2009

1 The Response was received by the Center March 18, 2009, however, it was transmitted electronically while it was still March 17, 2009 at the location of Respondent's counsel. The Panel finds that the Response was timely.

2 Where a registrar discloses the existence and identity of an underlying registrant in a privacy shield case, it is the Center's practice to invite the complainant to submit an amendment to the complaint, adding the disclosed registrant as a respondent. The Center makes no substantive evaluation as to the identity of the proper respondent and therefore lists both the domain name/privacy protection service and the underlying domain name owner as respondents, leaving the ultimate determination as to the identity of the proper respondent to the sole discretion of the Panel. See, e.g., Metro Sportswear Limited (trading as Canada Goose) v. Vertical Axis Inc. and Canadagoose.com c/o Whois Identity Shield,WIPO Case No. D2008-0754 (citing WWF-World Wide Fund for Nature aka WWF International v. Moniker Online Services LLC and Gregory Ricks,
WIPO Case No. D2006-0975). The term “Respondent” in this decision refers to Vertical Axis, Inc.

3 Complainant alleges that it attaches some copies of the trademark certificates to the Complaint; not all the alleged registrations are attached, however, and some which are attached are not described in the Complaint (for example the registration document for Complainant's Norwegian mark “stonepanel cupa,” which appears to only cover a logo).

4 Portions of the Complaint lack precision, including in particular the accuracy of case citations and the attempted translations into English of several Spanish-language UDRP decisions. The Panel has attempted to consider the actual cases that Complainant tried to cite, and has attempted to construe Complainant's arguments within the regular framework of the Policy, even where the Complaint appears to deviate. Citations have been corrected by the Panel.

6 The Panel notes that the Complaint's description of its protectable marks is misleading in several ways. First, the Complaint lists registrations without explaining that several are stylized rather than marks consisting only of the word “stonepanel.” Second, the official online information respecting the described International trademark registration differs from the dates of application and registration presented in the Complaint. Finally, as pointed out by Respondent, the alleged U.S. registrations are applications (1) still pending final action, and (2) for “design plus word,” to which the U.S. Patent and Trademark Office (USPTO) attaches conditions specifically requiring that “no claim is made to the exclusive right to use ‘stone panel' apart from the mark as shown.” Respondent's Exhibit 4, a printout of pages from the USPTO's Trademark Electronic Search System, shows that the “mark as shown” as submitted by Complainant includes colors, stylized lettering and a geometrical design.

7 Having determined that the disputed domain name is identical to Complainant's Spanish trademark, which protects words only, the Panel finds inapplicable Respondent's assertion respecting the absence of the visual design element from the domain name.

8 Support for Respondent's business practices by UDRP panels has not been unanimous. Some of these decisions also include dissents, and Respondent has also lost cases based on its business model. E.g., E-Switch, Inc. v. Vertical Axis, Inc. c/o Domain Administrator, supra; Ustream.TV, Inc. v. Vertical Axis, Inc, WIPO Case No. D2008-0598.

9 For example, the Complaint refers to Exhibit 7 as an example of its advertising campaigns directed at the construction industry audience. The Exhibit however consists merely of brochures describing the Stonepanel product and specifications. Since the Exhibit contains no information such as cost or distribution of ad placements, revenues attributable to Complainant's sales of the product, or market share, the Panel finds, as discussed below, that Exhibit 7 does not contribute to any showing by Complainant that its product or marks are well-known.

10 To the extent that the initial Complaint alleges bad faith based on statements that Respondent's identity is unknown or that registration details are misleading or inaccurate, the Panel disregards those statements, in light of Complainant's summary amendments to the Complaint listing Vertical Axis, Inc. as Respondent.

11 The Panel refrains from considering the effect of any of Complainant's other trademark registrations since, as noted above, they are for stylized designs plus words, expressly disclaim protection for words alone, or have not yet issued. In response to the Complaint's allegation that Respondent uses the “trademark image” of Complainant, the Panel notes that there is no evidence showing that the stylized words or logo of Complainant have been reproduced or displayed by Respondent.

12 The Panel reads more narrowly than Respondent the two cases cited in support of this proposition. In Corbis Corporation v. Zest, supra, unlike this case, the complainant was the prior registrant that had let the domain name registration lapse. In CB Publishing, LLC v. Akway International Ltd c/o Hostmaster, supra, the panel found Reverse Domain Name Hijacking against a complainant which had made a series of grave misrepresentations in the Complaint.

The Panel also declines Respondent's invitation to find that Complainant's trademark is unenforceable under the Policy because it is generic or descriptive. The Panel interprets the two cases cited by Respondent to suggest that the circumstances in which such rulings would be appropriate are quite limited.